The Court of Appeal has ordered that a trademark dispute between M&S and Interflora, in which the latter won the case, be retried.
The case, which first kicked off in 2008, involved a legal dispute between the two brands over Marks & Spencer’s use of keyword advertising, which used the word "Interflora" on Google Adwords.
M&S had bid on the word "Interflora" in Google keyword searches, which triggers a link to the retailers own florist service. It had been able to do so as a result of changes to Google’s policies in 2008 that enabled brands to bid on competitor’s trademarks as search keywords for the first time.
If the retrial finds in favour of M&S, bidding on a competitor's trademark could become even more liberal
However, Interflora at the time argued the move infringed its trademark rights. Because the business is comprised of a network of independent florists, it argued consumers searching for Interflora online might wrongly suppose that M&S was part of the company.
After a five-year battle, the High Court found in favour of Interflora in 2013, finding that the "average consumer" might presume Marks & Spencer was part of the Interflora network when it appeared.
However, this week the Court of Appeal criticised the judge’s reliance on the concept of "initial interest confusion", which enabled him to come to the decision, labelling the doctrine "unnecessary and potentially misleading".
In a "very unusual" move by the Court of Appeal, Lee Curtis, trademark attorney and partner at firm HGF, said the High Court has now been ordered to "have a second go hearing the case."
Curtis said: "The case and its outcome is crucial on laying down some guidelines in the multi-billion pound keyword and pay per click advertising sector in the UK, and if Marks & Spencer's win it might reinforce the relatively permissive use of bidding on competitor's trade marks in keyword advertising."
He said the case, if found not to be in favour of Interflora on retrial, could set a legal precedent for future cases which would make the practice "even more liberal".
Curtis said: "It wont be a free for all but it will make easier [to bid on a competitor’s trademark] if M&S wins, it will make it even more liberal," adding the retrial would likely be a lengthy and costly process.
At the time of the original dispute, lawyers predicted brands would be more cautious when bidding on competitor's trademarks.
Michael Barringer, Interflora marketing director said: Interflora continues to believe that the evidence before the court supports a finding of infringement and we are going forward on that basis to the retrial".
"People searching the internet for "Interflora" want "Interflora, the flower experts" and no one else. We are very proud of the Interflora brand, and want to protect it for our customers, our florists and our future.
"Accordingly, we believe it is right to continue to protect the brand through this court action."
A Marks & Spencer spokesperson said: "We are pleased with the Court of Appeal’s decision to overturn the judgement. We have always maintained that the High Court’s judgement was wrong and that our use of the Interflora trade mark as a Google Adword was fair competition providing our customers with a convenient way to shop for our flowers online.
"We are now reviewing the legal options available to us and it would be inappropriate for us to comment any further at this stage."